The patent examination process: Different approaches to searching at the USPTO

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2 The patent examination process: Different approaches to searching at the USPTO Jackie Cheng Supervisory Patent Examiner Technology Center 3700 Sue Liu Supervisory Patent Examiner Technology Center 1600 February 2019

3 Patent examination process

4 What is the role of a patent examiner? To protect the public interest with respect to intellectual property To provide direct service and assistance to both internal and external USPTO stakeholders To examine patentability with respect to invention(s) claimed in a patent application under the conditions for patentability set forth in Title 35 of the United States Code

5 What does a patent examiner do? Reads and understands the invention set forth in the specification Determines whether the application is adequate to define the metes and bounds of the claimed invention Determines the scope of the claim(s) Searches existing technology for claimed invention Ensures that all pertinent procedural steps necessary for obtaining a patent are complied with

6 What does a patent examiner do? Determines patentability of the claimed invention Provides a response, called an office action, identifying and analyzing all issues pertinent to patentability of the claimed invention Issues further office actions in response to applicant replies, as appropriate Issues notice of allowance or notice of abandonment

7 How does an application get to an examiner? Patent applications are given a classification based on the subject matter of the application and assigned to the proper technology center (TC) based on this classification. Each TC is an organization with various art units within a broad area of mechanical, electrical, chemical, or design, managed by one or more directors.

8 What electronic tools does an examiner use? Docket and Application Viewer (DAV) View docket and applications Prior art search tools Examiner's Automated Search Tool (EAST) Web Examiner Search Tool (WEST) Electronic databases Official Correspondence (OC) Write up outgoing correspondences to be sent to applicants/applicant s representatives

9 Searching

10 How are search strategies developed? Claim interpretation Read and understand the claimed invention Determine the scope of the claimed invention Consultation with other examiners Review of the cited prior art Information disclosure statements, 3rd party submissions Review of patent family documents (foreign, domestic) Review of international search reports (ISR) and written opinions for PCT 371 applications

11 Where do examiners search? U.S. patent databases (e.g. EAST/WEST, Google Patents) International patent databases (e.g. Espacenet, WIPO) Online databases (e.g. IEEE, PubMed, CAS, ProQuest, STN) Internet search engines (e.g. Google, Bing) Scientific and Technical Information Center (STIC) Technology-specific, internal USPTO electronic search assistance Anywhere they might find the information they need with evidence of the date of publication or availability

12 Ways to search a patent application Classification search Looking through all documents in a CPC symbol Most useful for mechanical area

13 Ways to search a patent application, cont. Classification search limited by text A61B 5/055 (involving electronic [EMR] or nuclear [NMR] magnetic resonance, e.g. magnetic resonance imaging) AND (fluid with flow) or velocity

14 Ways to search a patent application, cont. Text-only search (eeg or electroencephalogram) and (sleep with stage) and ((night or sleep) with terror)

15 Ways to search a patent application, cont. Information Disclosure Statement (IDS) Inventor and assignee searches Forward/backward reference search

16 Search strategies for biotech applications

17 Biotech search strategies Biological sequence searches Public and patent databases DNA and amino acid sequences Chemical compounds and reaction searches Structure searches Chemical name searches

18 USPTO commercial biotech databases Vendor Searchable Collection Comments STN (Scientific and Technical Information Network) Partners are: - Chemical Abstract Service (CAS) - FIZ Karlsruhe - Japan Association for International Chemical Information (JAICI) Contains over 150 databases. STN databases are accessible through three interfaces: STN Express, STN on the Web SM, or STN Easy. These interfaces are available to examiners via the Patent Examiner's Toolkit. Requires an ID and password. Offers the largest collection of chemical and related information. Databases cover many scientific disciplines, including biomedical science, chemistry, engineering, materials science, pharmaceuticals, and agricultural science. Coverage varies by database. CAplus SM alone contains more than 40.1 million records which are included in more than 10,000 journals back to early 1800s. STN Catalog (link is external) TCs with access: TC 1600, TC 1700, TC 2100, TC 2400, TC 2600, TC 2800, TC 3600, and TC 3700 ProQuest Dialog Owned by ProQuest ABSS databases (Automated Biotechnology Sequence Search System) Contains over 100 databases ProQuest Dialog's information focus includes business, intellectual property, law, government, news science and technology through more than 1 billion unique records from the world's most authoritative publishers. ProQuest Dialog is available to patent examiners on the Patent Examiner's Toolkit. Requires an ID and password. Patent Examiners also have access by IP authentication to custom collections of content based on their specific Technology Center. ProQuest Dialog (link is external) Genetic sequence search system. The USPTO internal genetic sequence search system composed of commercially available databases such as Genbank/EMBL, Geneseq, PIR, and UniProt. In-house databases (pending applications, issued patents, and published applications (PGPubs)) are also available for interference and prior art purposes. Useful for routine sequence searching as well as specialized searches, including alignments, length-limited, oligomer, and score/length. TCs with access: TC 1600, TC1700, TC2100, TC2400, TC2600, TC2800, TC3600, and TC3700 TCs with access: TC 1600

19 Sequence searching Commercially available vendor at USPTO: ABSS Public available searching tools such as NCBI s BLAST STN searching smaller sequences and with modified residues Applications with biological sequences must comply with the sequence rules and submitting the appropriate CRF (computer readable form) The query sequence must have a valid CRF for ABSS searching

20 ABSS searchable database content Peptide databases Database name Results file extension Producer A-Geneseq.rag Clarivate Analytics content/uploads/2018/03/geneseq- Fact- Sheet2.pdf Source of sequences Protein sequences extracted from the original (basic) patent documents published by over 40 patent offices worldwide. PIR.rpr National Biomedical Research Foundation Protein Identification Resource. This database is archival; it is no longer updated. UNIPROT.rup Universal Protein Resource. Central repository of protein and sequence function created by joining the information contained in Swiss-Prot, TrEMBL, and PIR. PendingAA.rapm and.rapn USPTO Protein sequences from USPTO pending applications. IssuedAA.rai USPTO Protein sequences from issued US patents. This information may be available in commercial databases. Published ApplicationsAA.rapbm and.rapbn USPTO Applications published 18 months after receipt by USPTO. Data in this file may be used for a rejection. This information may be available in commercial databases.

21 ABSS searchable database content Nucleotide databases Database name Results file extension Producer GenEmbl.rge National Center for Biotechnology Information EST.rst National Center for Biotechnology Information N-Geneseq.rng Clarivate Analytics content/uploads/2018/03/geneseq-fact- Sheet2.pdf Source of sequences An annotated collection of allpublicly available DNA sequences. GenBank is part of the International Nucleotide Sequence Database Collaboration, which comprises the DNA DataBank of Japan (DDBJ), the European Molecular Biology Laboratory (EMBL), and GenBank at NCBI. These three organizations exchange data on a daily basis. Expressed Sequence Tags (EST) and Sequence Tagged Sites (STS) from GenBank. Nucleic acid sequences extracted from the original (basic) patent documents published by over 40 patent offices worldwide. PendingNA.rnpm and.rnpn USPTO Nucleic acid sequences from USPTO pending applications. IssuedNA.rni USPTO Nucleic acid sequences from issued US patents. This information may be available in commercial databases. Published ApplicationsNA.rnpbm and.rnpbn USPTO Applications published 18 months after receipt by USPTO. Data in this file may be used for a rejection. This information may be available in commercial databases.

22 Types of alignments Default: one-to-one using Smith-Waterman algorithm showing best local similarity Multi-sequence: multiple sequences in a single alignment plot using CLUSTAL W algorithm (Jemboss Emma) Global: one-to-one global alignment using Needleman-Wunsch algorithm (Jemboss Needle)

23 Types of alignments: default Default: one-to-one using Smith-Waterman algorithm showing best local similarity

24 Types of alignments: multi-sequence Multi-sequence: multiple sequences in a single alignment plot using CLUSTAL W algorithm (Jemboss Emma)

25 Chemical structure searches Chemical name search (text searching) Chemical compound structure search Chemical reaction search Patent and non-patent databases

26 Example of text searching using Royal Society of Chemistry (RSC)

27 Example of chemical structure search using STNext STNext at next.stn.org

28 Results of chemical structure search using STNext

29 Example of chemical reaction searching using Scifinder

30 Example of chemical reaction searching using Scifinder

31 So what is the best way to search? There is no best way. Search strategy depends on: technology claims themselves examiner expertise combination of techniques

32 Questions?

33 Thank you!

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